Intellectual Property Law

TTAB Reverses Genericness Refusal of "DIGITAL OILFIELD" for B-to-B E-Commerce Services

Posted on April 22, 2008
Genericness refusals must be supported by clear evidence, and the PTO fell short of that standard in its refusal to register, on the Supplemental Register, the mark DIGITAL OILFIELD for various business-to-business e-commerce computer goods and services...

Precedential No. 19: TTAB Finds Stitching Design on Jean Pockets Merely Ornamental

Posted on April 19, 2008
The Board affirmed "mere ornamentation" refusals of the three alleged marks shown immediately below (each described as a "stitching design on side-by-side pockets") for jeans and other clothing items, finding that the designs fail to function as trademarks...

TTABlogger Receives Refusable Offer From "Patent Trademark Register"

Posted on April 17, 2008
When the registration certificate for THE TTABLOG arrived last month, I expected it to be followed by a shipload of tantalizing offers for framed copies, bronzed copies, t-shirts bearing copies, etc. Here (pdf) is one of the offers that I was able to refuse...

Guest Comment: Pamela Chestek on the TTAB's Bose v. Hexawave Ruling re "Use in Commerce"

Posted on April 16, 2008
In an April 9, 2008 ruling (here), the Board denied Opposer Bose Corporation's request for reconsideration of the decision of November 6, 2007 in Bose Corp. v. Hexawave, Inc., Opposition No. 91157315 [not precedential]. [TTABlogged here]. In that decision, the Board found that Bose had committed fraud when it renewed one of its trademark registrations because the alleged use of the subject mark consisted of transporting the goods back to their owners after repair...

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Precedential No. 18: TTAB Grants Summary Judgment Against Applicant Enjoined From Use and Registration of His Mark

Posted on April 15, 2008
The Board granted summary judgment to Opposer Daimler Chrysler in its Section 2(d) opposition to registration of the mark FORADODGE for various consulting services. Daimler Chrysler argued that it was entitled to judgment under the doctrine of issue preclusion, based upon a federal court judgment in an Anticybersquatting Consumer Protection Act (ACPA) lawsuit against Applicant Keith Maydak...

"CINQUANTE-CINQ" and "55" Confusingly Similar for Wine, Says TTAB, Equivalently

Posted on April 14, 2008
There was no equivocation in the Board's application of the doctrine of foreign equivalents to find the mark shown immediately below likely to cause confusion with the registered mark CINQUANTE-CINQ, both for wine. Applicant unsuccessfully argued, based on its interpretation of the CAFC's decision in Palm Bay Imports, Inc...

Finding No Cultural Significance for "HONEYSUCKLE ROSE," TTAB Affirms 2(d) Refusal over "HONEYSUCKLE" For Clothing

Posted on April 11, 2008
Rejecting Applicant's contention that its mark HONEYSUCKLE ROSE (slightly stylized) has "cultural significance" that would change its connotation, the Board affirmed a Section 2(d) refusal to register that mark for various clothing items, finding it likely to cause confusion with the mark HONEYSUCKLE & Design (shown below) for clothing...

Precedential No. 17: TTAB Dismisses "SPORTSMAN'S WAREHOUSE" Cancellation Petition, Finding No Likelihood of Confusion and No Fraud

Posted on April 10, 2008
In an enervating 49-page decision, the Board tossed overboard a petition for cancellation of a registration for the SPORTSMAN'S WAREHOUSE logo mark [all wording disclaimed] shown immediately below, for retail and wholesale sporting goods store services, finding the mark not likely to cause confusion with Petitioner Bass Pro's registered logo mark BASS PRO SHOPS SPORTSMAN'S WAREHOUSE (shown way below) [SPORTSMAN'S WAREHOUSE disclaimed] for essentially the same retail store services...

PTO Proposes Rule Changes Regarding Express Mail and Certificate of Mailing Filings

Posted on April 09, 2008
In a Notice published in the Federal Register on February 29, 2008 (here), the PTO proposes to amend the Trademark Rules of Practice to provide that the procedures for filing trademark correspondence by Express Mail or under a certificate of mailing or transmission do not apply to certain specified documents for which an electronic form is available in the Trademark Electronic Application System (??TEAS??)...

TTAB Reverses Mere Descriptiveness Refusal of "PETIT-PETITE" for Wine

Posted on April 08, 2008
Finding that the PTO had failed to carry its burden to show the mark PETIT-PETITE to be merely descriptive of wine, the Board reversed a 2(e)(1) refusal. In re Phillips Farms, LLC, Serial No. 78669171 (March 26, 2008) [not precedential].Syrah grapesThe PTO first squashed Applicant's argument that the case was not ripe for appeal: the subject application was filed under Section (1)(b) and, since a specimen of use had not yet been filed, the PTO incorrectly "conducted a preliminary review and found that the mark PETIT-PETITE is descriptive for wine, all wines, in all market conditions, absent the realities of the mark used in commerce...

Seventh Circuit Vacates Google's Judgment Against Stoller Companies

Posted on April 07, 2008
The U.S. Court of Appeals for the Seventh Circuit has vacated the March 15, 2007 judgment entered by the Chicago federal district court in Google's RICO lawsuit against Leo Stoller's companies, Central Mfg. Inc. and Stealth Industries, Inc. The appellate court ruled (here) that the lower court had erred in denying Leo Stoller's motion to intervene (TTABlogged here), and it returned the case to the district court for reconsideration of Stoller's motion...

"REPTILE SAUSAGE" Merely Descriptive of Food for Reptiles, Says TTAB

Posted on April 04, 2008
I swear I never sausage a decision. The Board affirmed a Section 2(e)(1) refusal to register the mark REPTILE SAUSAGE, finding it merely descriptive of "food for animals, namely, for meat eating reptiles." In re Natural Balance Pet Foods, Inc., Serial Nos...

Precedential No. 16: Finding the Marks Entirely Different, TTAB Grants Judgment on the Pleadings in 2(d) Opposition

Posted on April 03, 2008
Well here's a seldom-used shortcut to victory: a motion for judgment on the pleadings under FRCP 12(c). Applicant P.A.C. Trading Group sought to register the mark PAC BOOSTER THE PERFECT SOUND for car and home audio and video equipment ["BOOSTER THE PERFECT SOUND" disclaimed]...

TTAB Posts April 2008 Hearing Schedule

Posted on April 01, 2008
The Trademark Trial and Appeal Board has scheduled four hearings for the month of April, as listed below. The hearings will be held in the East Wing of the Madison Building. [The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]...

TTABlog Quarterly Index: January 2008 - March 2008

Posted on March 31, 2008
For those who haven't noticed, e-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feeblitz.Section 2(a) - Deceptiveness:TTAB Affirms 2(a) Deceptiveness Refusal of "MINK BIKINI" for Minkless Clothing Finding "MINK" Deceptive and Deceptively Misdescriptive for Clothing, TTAB Affirms 2(a) and 2(e)(1) RefusalsSection 2(a) - False Connection: TTAB Reverses 2(a) Refusal of "L'OREAL PARIS" for Aloe Vera Drinks: PTO Fails to Show False Connection with French Cosmetics CompanySection 2(d) - Likelihood of Confusion: TTAB Grants 2(d) Summary Judgment: "MEIER'S" and "MEYER VINEYARD" for Wine Confusingly Similar TTAB Finds Design Marks for Motorcycles Confusingly Similar: What Say You? Fame Dominates as TTAB Sustains "PLAYBOY" Opposition to "PLAY BODY" for Clothing Precedential No...

Precedential No. 14: TTAB Again Affirms Genericness of "HOTELS.COM" for ... Guess What?

Posted on March 28, 2008
It's déjà vu all over again! [Oops, I said that yesterday.] Anyway, the Board again has affirmed a genericness refusal of HOTELS.COM for "providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network...

USPTO Issues Service Mark Registration for "THE TTABLOG"

Posted on March 19, 2008
In case you missed it, on March 18, 2008, the USPTO issued Registration No. 3,398,417 for the mark THE TTABLOG for "An online blog featuring commentary and information in the field of trademarks; an online blog featuring commentary and information regarding decisions of the Trademark Trial and Appeal Board and the courts relating to trademark law...

Precedential No. 10: TTAB Sustains "VITAMILK" 2(d) Opposition, Again Rejects a Morehouse Defense

Posted on March 03, 2008
I like to call it the "Toothless Tiger of Trademark Law." Others call it the "Morehouse defense." In this opposition to registration of the mark VITAMILK for "soy beverages, namely, fruit juices and fruit drinks made with soy," the Morehouse defense failed again...

Precedential No. 9: TTAB Issues Non-Ultimate Sanctions for Failure To Comply With Board Order Compelling Document Production

Posted on February 29, 2008
In another precedential discovery ruling (the third of 2008), the Board issued sanctions against M.C.I. Foods, Inc. for failure to produce documents as required by the Board's discovery orders, but stopped short of issuing judgment against the offender...

Unfriendly Shores? Recent Developments in U.S. Law May Trouble Foreign Trademark Owners

Posted on February 25, 2008
by John L. Welch and Ann Lamport HammitteLowrie, Lando & Anastasi, LLPForeign trademark owners who seek registration in the United States may be troubled by several recent developments in American trademark law. The Trademark Trial and Appeal Board?s current fraud jurisprudence holds an applicant or registrant strictly responsible for false statements made to the United States Patent and Trademark Office (USPTO) regarding use of its mark on the goods and services involved, with very little room for error or innocence...

Precedential No. 8: Applicant Fails to Prove Acquired Distinctiveness for Sunglass Frame Product Design

Posted on February 22, 2008
The Board affirmed a refusal to register the product configuration mark shown below for "spectacles, sunglasses," finding that Applicant had failed to prove acquired distinctiveness. The alleged mark comprised three "fingers" located near the earpiece hinge and resembles an "asymmetrical fork...

Precedential No. 7: TTAB Dismisses 2(d) and Dilution Opposition for Lack of Evidence and Inadequate Pleading

Posted on February 21, 2008
Opposer Demon International had a devil of a time in this Section 2(d)/dilution opposition proceeding. It failed to properly plead the dilution claim and it put in no evidence to establish standing or priority on its likelihood of confusion claim. So it lost...

TTAB Dubiously Finds "SOCK-UM" for a Parlor Game Confusingly Similar to "ROCK'EM SOCK'EM ROBOTS" for Action Games

Posted on February 15, 2008
In what it readily acknowledged was a "close case," the Board sustained a Section 2(d) opposition brought by Mattel, Inc. against registration of the mark SOCK-UM for a "game where a labeled mat is placed on the ground or floor, participants position themselves on the mat and volley a sock back and forth from one half of the mat to the other half of the mat...

TTAB Dismisses Opposition to Bottle Shape Trademark: Opposer Failed to Prove Functionality

Posted on February 14, 2008
Applying the CCPA's Morton-Norwich analysis, the Board dismissed an opposition to registration of the product configuration mark shown below for "plastic water bottle, sold empty," rejecting Opposer's claim that the design is de jure functional. Opposer also pleaded, but failed to pursue, the issue of acquired distinctiveness...

TTAB Reverses 2(d) Refusal: "ROYALE" for Camping Trailers Not Confusingly Similar to "ROYAL CARGO" for Cargo Trailers

Posted on February 13, 2008
In late October 2007, the TTAB came to Boston for a conference at Suffolk Law School, where it heard the final arguments in In re Fleetwood Enterprises, Inc., Serial No. 78579524 (February 2, 2008) [not precedential]. After the argument, a straw poll of attendees indicated that they were virtually unanimous in expecting the Applicant to prevail...

Precedential No. 67 (2007): Finding Two-Days' Notice Insufficient, TTAB Strikes Opposer's Testimony and Dismisses Opposition

Posted on February 12, 2008
One just never knows when a precedential interlocutory ruling of the TTAB may explode in the firmament. The Board does not include interlocutory decision in its database of decision (only final decisions), and so once in a while one of these interlocutories suddenly and unexpectedly appears...

Precedential No. 5: TTAB Dismisses Opposition for Opposer's Failure to Serve Prior to Filing

Posted on February 11, 2008
I'll bet the Board was just waiting for this to happen: an opposer failed to follow the new TTAB rules (effective Nov. 1, 2007) that require service of a Notice of Opposition on the applicant prior to filing. See Rules 2.101(a) and 2.101(d)(4). The opposition was dismissed as a nullity...

Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese

Posted on February 08, 2008
Applicant Cheezhwse.com, which lost the NAPOLEON BRIE case last October (TTABlogged here), racked up another "L" before the TTAB. This time it hit the TTAB trifecta when the Board affirmed three refusals to register the mark NORMANDIE CAMEMBERT for cheese...

Precedential No. 3: NFL Thrown for a Loss as TTAB Denies Request to Extend Discovery

Posted on February 07, 2008
Some people think the NFL is overly aggressive in enforcing its trademark rights. Will its institution of this case bolster that impression? The NFL is opposing (on 2(a), 2(d), and dilution grounds) the mark shown below left, for motorcycle fender side cover panels, based upon the League's ownership of the mark shown on the right, for football services, clothing, and various other goods...

Precedential No. 2: TTAB Issues Sanctions For Discovery Abuses

Posted on February 06, 2008
Whenever the TTAB issues a precedential decision, I try to discern what point the Board is trying to make. In this, the second precedential decision of 2008, the message I get is this: don't mess with Interlocutory Attorney Andrew Baxley. Opposer HighBeam Marketing learned that lesson the hard way when it failed to comply with a Board order compelling additional discovery responses...

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